A trademark is a symbol, word, or words that identifies the source of goods or services. The word(s) or symbol (i.e., the “mark”) becomes a trademark either by legal registration through the trademark filing process, or by common law use. This article is an introduction to trademarks. It explains why one would register a trademark, an overview of the trademark filing process, and the significance of date of use and date of application.
Common Law Trademarks Versus Registering Trademarks
Trademark rights in the U.S. are granted simply by the use of the mark. In other words, under common law, an owner of a mark obtains trademark rights in a territory at the point when the mark is used in that territory. When a mark owner registers a trademark, the registration establishes constructive use from the date of filing an application. By registering your mark, the trademark is publicly published, and your rights to it will be easier to defend in court.
For applicants who seek to obtain the federal registration, use of the mark is still required. At the time of filing, an applicant may file while the mark is being used, or file with the intent to use the mark. To receive a federal registration, use of the mark must be in commerce. Use in commerce means that the mark is being used over state lines by either sale of goods or services rendered.
Applying for a Trademark
A trademark applicant may file two common types of applications:
- Actual use (if the mark is already being used)
- Intent to use, or ITU (if the mark has not yet been used)
Under Section 7(c) of the Trademark Act, the filing date of an application establishes a registrant’s date of constructive use. Constructive use is a concept that allows an ITU applicant to claim the date that the ITU application was filed as the date that the mark was used in commerce, even though the mark might not actually be used until a later date.
Significance of Filing Date
The filing date establishes a nationwide priority, except against a person who began use of the mark prior to that date. Section 22 of the Trademark Act provides that the registration itself establishes the registrant’s claim of ownership of the mark, precluding anyone from claiming “good faith innocent use” or “expanded use” of the same mark after the registration date. Registration establishes a rebuttable presumption that the mark was first used on the filing date.
The priority of ITU applicants is determined by the date the ITU application is filed, not the date of use.
Understanding What and When
An ITU application cannot mature into a registration before the applicant actually uses the mark in commerce. When an ITU application matures to a registration, the registrant can claim the date of filing as the priority date for the purpose of determining exclusive rights should to marks conflict.
Before filing an application, applicants should take some time to think about how the mark is, or will be, used. We felt an introduction to trademarks was so important because, at times, applicants overlook the fact that a trademark identifies the source of goods or services. To avoid any setbacks in obtaining a trademark registration, it is important that the mark is, or will be, displayed in a way that identifies the source of the good or service.